Opposition Brief — Rimini Street, Inc., et al., Petitioners v. Oracle USA, Inc., et al.

Supreme Court briefAug 1, 2018

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No. 17-1625

In the

Supreme Court of the United States

________________

RIMINI STREET, INC., et al.,

Petitioners,

ORACLE USA, INC., et al.,

________________

Respondents.

On Petition for Writ of Certiorari to the

United States Court of Appeals

for the Ninth Circuit

________________

BRIEF IN OPPOSITION

________________

WILLIAM A. ISAACSON

KAREN L. DUNN

BOIES, SCHILLER

& FLEXNER LLP

1401 New York

Avenue, NW

Washington, DC 20005

(202) 237-2727

PAUL D. CLEMENT

Counsel of Record

ERIN E. MURPHY

MATTHEW D. ROWEN

KIRKLAND & ELLIS LLP

655 Fifteenth Street, NW

Washington, DC 20005

(202) 879-5000

paul.clement@kirkland.com

Counsel for Respondents

(Additional Counsel Listed on Inside Cover)

August 1, 2018

JOHN A. POLITO

MORGAN, LEWIS &

BOCKIUS LLP

One Market

Spear Street Tower

San Francisco, CA 94105

(415) 442-1000

DAVID B. SALMONS

MORGAN, LEWIS &

BOCKIUS LLP

2020 K Street, NW

Washington, DC 20006

(202) 373-6238

QUESTION PRESENTED

The Copyright Act provides that a court “in its

discretion may allow the recovery of full costs” to a

prevailing party. 17 U.S.C. §505. That “full costs”

language stands in contrast to the default federal costshifting statute, under which courts may “tax as costs”

only certain enumerated litigation expenses—

generally known as “taxable costs.” See 28 U.S.C.

§1920.

The question presented is:

Whether the Copyright Act, which gives courts

“discretion” to award prevailing parties their “full

costs,” authorizes recovery of the full range of

litigation costs, or authorizes recovery of only those

costs that are taxable under 28 U.S.C. §1920.

PARTIES TO THE PROCEEDING

Petitioners, and defendants below, are Rimini

Street, Inc., and Seth Ravin.

Respondents, and plaintiffs below, are Oracle

America, Inc., and Oracle International Corporation.

Although Oracle USA, Inc., continues to be named in

the case caption as a plaintiff, that entity no longer

exists.

iii

CORPORATE DISCLOSURE STATEMENT

Oracle Corporation is the ultimate parent

company of Oracle America, Inc., and Oracle

International Corporation. Oracle Corporation also

was the ultimate parent of Oracle USA, Inc., but that

entity no longer exists. Oracle Corporation wholly

owns, through one or more of its privately-held,

wholly-owned subsidiaries, Oracle America, Inc. and

Oracle International Corporation. No other publicly

held corporation owns 10% or more of the stock in

Oracle America, Inc., or Oracle International

Corporation.

TABLE OF CONTENTS

QUESTION PRESENTED .......................................... i

PARTIES TO THE PROCEEDING ........................... ii

CORPORATE DISCLOSURE STATEMENT ........... iii

TABLE OF AUTHORITIES ....................................... v

INTRODUCTION ....................................................... 1

STATEMENT OF THE CASE ................................... 3

A. Factual Background ..................................... 3

B. Proceedings Below ........................................ 7

REASONS FOR DENYING THE PETITION ......... 11

There Is No Meaningful Circuit Conflict That

Warrants This Court’s Review .......................... 13

II. The Decision Below Is Correct .......................... 16

A. The Ninth Circuit’s Interpretation of

§505 Is Entirely Consistent With This

Court’s Precedents...................................... 16

B. “Full Costs” Has Always Meant Full

Costs............................................................ 20

III. This Case Is A Poor Candidate For Plenary

Review ................................................................ 22

CONCLUSION ......................................................... 25

TABLE OF AUTHORITIES

Cases

Arlington Cent. Sch. Dist. Bd. of Educ.

v. Murphy,

548 U.S. 291 (2006) ................................................ 19

Artisan Contractors Ass'n of Am., Inc.

v. Frontier Ins. Co.,

275 F.3d 1038 (11th Cir. 2001)........................ 14, 15

BMG Rights Mgmt. (US) LLC

v. Cox Commc’ns, Inc.,

234 F. Supp. 3d 760 (E.D. Va. 2017) ..................... 14

BMG Rights Mgmt. (US) LLC

v. Cox Commc’ns, Inc.,

881 F.3d 293 (4th Cir. 2018).................................. 24

Coles v. Wonder,

283 F.3d 798 (6th Cir. 2002).................................. 14

Crawford Fitting Co. v. J.T. Gibbons, Inc.,

482 U.S. 437 (1987) .......................................... 13, 17

CRST Van Expedited v. EEOC,

136 S. Ct. 1642 (2016)............................................ 24

Culbertson v. Berryhill,

No. 17-773

(U.S. cert. granted May 21, 2018) ......................... 24

Dastar Corp. v. Random House, Inc.,

No. 05-1259 (U.S. June 26, 2006) .......................... 14

Fogerty v. Fantasy, Inc.,

510 U.S. 517 (1994) .......................................... 22, 23

In re Online DVD-Rental Antitrust Litig.,

779 F.3d 914 (9th Cir. 2015).................................. 21

InvesSys, Inc. v. McGraw-Hill Cos.,

369 F.3d 16 (1st Cir. 2004) .................................... 14

Mount Olympus Mortg. Co. v. Anderson,

No. 30-2014-00729438, 2016 WL 6157099

(Cal. Super. Ct. Sept. 19, 2016) ............................. 10

Murphy v. Smith,

138 S. Ct. 784 (2018).............................................. 24

Nw. Forest Res. Council v. Glickman,

82 F.3d 825 (9th Cir. 1996).................................... 18

Pinkham v. Camex, Inc.,

84 F.3d 292 (8th Cir. 1996).............................. 14, 15

Susan Wakeen Doll Co.

v. Ashton Drake Galleries,

272 F.3d 441 (7th Cir. 2001).................................. 14

Taniguchi v. Kan Pac. Saipan, Ltd.,

566 U.S. 560 (2012) ................................................ 13

Twentieth Century Fox Film Corp.

v. Entm’t Distrib.,

429 F.3d 869 (9th Cir. 2005)............................ 13, 18

W. Va. Univ. Hosps., Inc. v. Casey,

499 U.S. 83 (1991) ............................................ 18, 19

Statutes

15 U.S.C. §1691e(d) .................................................. 18

17 U.S.C. §505 ................................................ 1, 13, 16

20 U.S.C. §1415(i)(3)(B)............................................ 19

28 U.S.C. §1821 ........................................................ 13

28 U.S.C. §1920 ........................................................ 13

28 U.S.C. §1923 ........................................................ 13

29 U.S.C. §216(b) ...................................................... 18

vii

42 U.S.C. §6104(e)(1) ................................................ 18

Judiciary Act of 1789, ch. 20, 1 Stat. 73 ............ 20, 21

Act of Sept. 29, 1789, ch. 21, 1 Stat. 93 ................... 20

Act of Feb. 15, 1819, ch. 19, 3 Stat. 481 ................... 21

Fee Act of 1853, ch. 80, 10 Stat. 160 ........................ 21

Other Authorities

10 Charles Alan Wright et al., Federal

Practice and Procedure (3d ed. 1998) .................... 20

Amended Judgment, Oracle Corp.

v. SAP AG, No. 07-CV-1658

(N.D. Cal. Nov. 14, 2014) ......................................... 4

FBI Press Release, TomorrowNow, Inc.,

Sentenced on Computer Intrusion and

(Sept. 14, 2011), http://bit.ly/2kVbc0j ..................... 4

H.R. Rep. No. 60-2222 (1909) ................................... 22

Pet. for Cert., Dastar Corp., No. 05-1259

(U.S. filed Mar. 28, 2006) ...................................... 14

Reporter’s Transcript of Jury Trial, Day 4

(D. Nev. Sept. 17, 2015) ........................................... 4

INTRODUCTION

This case is the poster child for why Congress

gave courts “discretion” to award prevailing parties in

Petitioners are conspicuously silent as to why the

district court exercised its discretion to award both

taxable and non-taxable costs (and attorneys’ fees) in

this case—and understandably so, as both the fact of

the award and its size were a direct result of their

egregious litigation misconduct. Upon learning that

they were likely to be sued for infringing Oracle’s

copyrights, petitioners responded by destroying the

evidence of their serial infringement—a library of illgotten copies of Oracle’s copyrighted materials that

was twice the size of the Library of Congress.

Petitioners then repeatedly denied under oath the core

conduct underlying this lawsuit—only to reverse

course and confess at trial that these past denials were

false. As a direct result of this (now conceded)

destruction and dissembling, Oracle was forced to

spend millions of dollars on experts who

painstakingly pieced together copious evidence of

extensive copying that petitioners no longer even

bother to deny. That is why Oracle had non-taxable

costs in excess of $17 million in this case, and that is

why the district court exercised is discretion to award

Oracle 75% of those costs.

Unable to muster any serious attack on the

district court’s exercise of its discretion under §505,

petitioners now ask this Court to eliminate that

discretion altogether. Invoking a shallow and stale

circuit split, petitioners ask this Court to resolve

whether §505 means what it says when it allows

recovery of “full costs,” or whether it actually allows

only “recovery of those costs set forth in 28 U.S.C.

§1920,” the general federal cost-shifting statute. The

Ninth Circuit first adopted in 2005 the plain-meaning

position petitioners now question. This Court denied

certiorari in response to a petition in that case that did

not even include the costs question among the

questions presented. In the ensuing years, no court of

appeals has needed to squarely address the question.

Nor has any court of appeals even cited, let alone

followed, the two per curiam opinions (now 17 and 22

years old) the Ninth Circuit declined to follow more

than a decade ago. This stale and shallow split hardly

cries out for this Court’s review.

In all events, even if this Court were inclined to

resolve the question presented, this would be a poor

vehicle to do so. The complete absence of amicus

support suggests either that the issue is unimportant

or that no one favoring petitioners’ position wants this

case involving egregious litigation misconduct to be

the test case (or both). Petitioners are facing more

than $20 million in costs because, in addition to

infringing Oracle’s copyrights to the tune of $35.6

million, they destroyed evidence and lied about their

misdeeds. If the question presented is truly important

and recurring, a case with less egregious facts and a

petitioner more deserving of this Court’s limited time

and resources (say, a prevailing copyright holder who

was

denied

considerable

non-taxable

costs)

undoubtedly will come along soon enough. And if such

a petitioner does not materialize, it will only

underscore that the question does not merit this

Court’s attention. Either way, the Court should deny

the petition.

STATEMENT OF THE CASE

A. Factual Background

This case arises out of Rimini’s adjudicated and

no-longer-contested serial infringement of 93 of

Oracle’s copyrights. Oracle develops and licenses an

extensive suite of enterprise software programs that

customers use to perform critical business functions.

As is typical in the industry, Oracle does not sell

ownership rights to its enterprise software.

Customers purchase licenses that enable them to use

specific programs and to access sites containing

support materials for those programs, while Oracle

retains all intellectual property rights in its works.

Those licenses impose strict limits on copying Oracle’s

software and even stricter limits on access, use, or

copying of the software and support materials by third

parties, including third parties who provide software

support.

Rimini was founded in 2005 by Seth Ravin.

Unlike Oracle, which spends billions of dollars on

research and development and employs more than

30,000 software engineers who write new programs as

well as patches, fixes, and updates for Oracle’s

existing software offerings, Rimini does not develop or

license its own enterprise software. Instead, Rimini

competes with Oracle to provide support services to

customers who use Oracle’s copyrighted enterprise

software. Pet.App.5a.

Rimini is not the first business of Ravin’s to try to

compete with Oracle in the market for supporting

Oracle’s software. Nor is it the first business of

Ravin’s to try to do so by engaging in serial copyright

infringement. Before starting Rimini, Ravin was

president of TomorrowNow, Inc., a company that, like

Rimini, provided support services to Oracle licensees.

Also like Rimini, TomorrowNow provided those

support services at prices well below what Oracle

charged. But that discount came at the expense of

Oracle and the copyright laws, as TomorrowNow

developed its “servicing” business by unlawfully

copying Oracle’s copyrighted software on a massive

scale. See Supplemental Excerpts of Record on Appeal

(“SER”) 376, 382-85, 421.

Indeed, shortly after TomorrowNow was acquired

by software conglomerate SAP, SAP not only shut the

company down upon concluding that its basic business

model was unlawful, but also stipulated to civil and

criminal liability based on TomorrowNow’s activities

during Ravin’s time at the helm. After extensive

litigation, SAP ultimately paid Oracle in excess of

$300 million, on top of the $20 million it paid the

government in criminal fines.

See Amended

Judgment ¶1, Oracle Corp. v. SAP AG, No. 07-CV1658 (N.D. Cal. Nov. 14, 2014), Dkt.1251.1 And Ravin

himself was held in contempt of court in the SAP

litigation for refusing to answer questions about what

happened at TomorrowNow on his watch.

See

Reporter’s Transcript of Jury Trial, Day 4 (D. Nev.

Sept. 17, 2015), Dkt.792 at 541-45.

Remarkably, criminal liability, civil liability, and

contempt of court did not motivate Ravin to change his

basic methods. Instead, his new company promptly

began serially infringing Oracle’s copyrights all over

1 See also FBI Press Release, TomorrowNow, Inc., Sentenced on

Computer Intrusion and Copyright Infringement Charges (Sept.

14, 2011), http://bit.ly/2kVbc0j.

again. One of the first things Rimini did was to pay

one of Ravin’s childhood friends to become an Oracle

“customer.” SER.253, 374-77. Rimini then used this

fake customer’s log-in credentials to access Oracle’s

customer-only support sites and download and copy

materials that it could use to provide support to actual

customers if and when it got them. SER.447-48, 514.

That was just the beginning of Rimini’s efforts to

stockpile a massive library of unlawfully copied Oracle

software. After Rimini discovered that Oracle did “not

‘check’ the [downloader’s] info entered against any

license agreement” on certain of its support sites,

Rimini’s employees began falsely representing on

those sites that they possessed licenses to access them.

SER.368-69. They then “help[ed] [themselves] to the

buffet,” to use Rimini’s own words, downloading

massive amounts of copyrighted material without

paying a nickel. SER.248-53, 368-69. Indeed, Rimini

used this tactic to download material from a support

site for a software program for which none of its

customers possessed a license at the time.

SER.134, 379 And once Rimini did have customers

with legitimate Oracle licenses, it used those

customers’ credentials to obtain dozens of copies of

Oracle software installation media by falsely claiming

that Rimini’s address was the customer’s “secondary

offsite backup location.” Excerpts of Record on Appeal

(“ER”) 78.

These are not the only ways Rimini copied

Oracle’s copyrighted software in violation of the terms

of Oracle’s licenses and support sites (not to mention

the Copyright Act).

Although Oracle expressly

prohibited licensees (which Rimini itself, of course,

was not) from using automated downloading tools on

its support sites, Ravin directed Rimini employees to

use such tools to download millions of protected files.

SER.133, 384-92, 412-14. Rimini’s downloading

through these tools became so intense that it crashed

an Oracle system, prompting Oracle to block Rimini’s

IP address and send a cease and desist letter. ER.38,

238-40. Upon learning that Oracle was “onto us for

massive download volumes,” rather than desist,

Rimini doubled down: It began using multiple virtual

machines to download the remaining files as quickly

as possible, and instructed employees to do this

downloading from their personal residences (rather

than Rimini’s IP address) to avoid detection. ER.23840, 976-77, 998-99, 1155-56; SER.133, 263.

All told, Rimini developed a library of copies of

Oracle software and support materials that was

“approximately a couple times the size of … all of the

books in the Library of Congress.” SER.446. These illgotten materials formed the backbone of Rimini’s

business. Instead of abiding by the restrictions in

Oracle’s licenses, which allowed a licensee (or a third

party supporting it) to access, use, and copy support

materials only to support the licensee’s own business

operations, Rimini used its massive library of

copyrighted materials to create environments (copies

of the software that petitioners “modified to develop

and test software updates”) for customers without

regard to whose license was used to obtain the

underlying software. ER.94 n.4. Petitioners then

engaged in even more unlicensed copying, “cloning”

environments built for one customer (which they

hosted on their own servers, also in contravention of

the license terms) for other customers. Petitioners

had hundreds of environments on their servers, each

one containing hundreds, if not thousands, of exact

copies of Oracle software. SER.254-57, 269, 356-60,

373, 447-48, 454, 483, 514.

Nothing was ambiguous about the nature of this

activity; even Rimini’s own lawyer told Ravin, “You

have to admit this looks pretty bad.” ER.474. Nor was

the reason for all this unauthorized copying

ambiguous: It enabled Rimini, in the words of one its

employees, to “mak[e] a crap load of money from”

selling services built around Oracle’s intellectual

property. ER.68-69. To be clear, Rimini could have

respected the terms of the licenses and could have

complied with Oracle’s terms of use. But that would

have taken a great deal of money and time, and thus

would have prevented Rimini from offering its services

at cut-rate prices. In short, as the district court found,

“Rimini’s business model was built entirely on its

infringement of Oracle’s copyrighted software and its

improper access and downloading of data from

Oracle’s website and computer systems, and Rimini

would not have achieved its … market share and

business growth without these infringing and illegal

actions.” Pet.App.49a.

B. Proceedings Below

In 2010, Oracle sued petitioners for copyright

infringement, violations of California’s and Nevada’s

computer-abuse laws, and other related claims.

Petitioners responded by admitting that they had

copied at least some of Oracle’s copyrighted software,

but claimed that all of their copying was authorized by

licensing agreements between Oracle and Rimini’s

customers.2 In particular, petitioners insisted that

they never engaged in “cross-use”—i.e., using one

licensee’s copy of Oracle’s copyrighted software to

provide support services to other customers.

Throughout the litigation, petitioners went to

great lengths to prevent Oracle and the court from

discovering the true nature of their conduct. First,

despite having been on notice of litigation, Rimini

“affirmatively and irretrievably deleted” its massive

library of intermingled copies of Oracle software and

support materials. SER.132. That spoliation, which

petitioners initially tried to cover up but ultimately

admitted, made it impossible to identify the source of

the thousands of software copies that Rimini used to

build the myriad development environments.

Second, petitioners repeatedly—and adamantly—

lied about cross-use. Ravin initially testified about

cross-use at Rimini in a deposition in the SAP

litigation (which went forward only after he was held

in contempt of court for resisting discovery, see supra),

where he insisted that Rimini never cross-used

Oracle’s software. SER.398-402. Ravin repeated that

denial in his deposition in this case, stating

emphatically that “[n]ever in the entire history of

Rimini” did “it ever occur[] that one customer’s

software environment ha[d] been used to develop a fix

or update that was ultimately delivered to a different

customer.” SER.627; see SER.413-14. Rimini’s Rule

2 Petitioners also claimed that, to the extent those licenses did

not authorize their copying, the licenses constituted copyright

misuse. The district court dismissed petitioners’ copyright

misuse counterclaim at the outset, a holding that the Ninth

Circuit ultimately affirmed.

30(b)(6) designee likewise testified that “all the

development” at Rimini “is done for a particular

customer in that customer’s environment using that

customer’s files.” SER.507. Rimini made the same

representations to the district court, insisting that

“each client is assigned a separate data ‘silo’ where

Oracle Software and Support Materials for only that

client are maintained.” SER.73-74.

As it turned out, those were all lies.

Notwithstanding petitioners’ destruction of Rimini’s

massive software library, Oracle painstakingly pieced

together evidence conclusively proving that Rimini

regularly used one customer’s “development

environments … to develop and test software updates

for … other Rimini customers.” ER.100 (emphasis

added). When confronted at trial with this evidence,

Ravin pivoted, blithely admitting that Rimini engaged

in cross-use “all the time” and that his earlier

deposition testimony denying as much was false.

ER.1225; see SER.410-16. Another Rimini witness

similarly admitted that the materials in the library

Rimini destroyed were not organized by customer,

meaning that Rimini had no way of knowing to whom

any of the software actually belonged. SER.354, 45254, 459.

In light of the overwhelming evidence of copyright

infringement (including petitioners’ own belated

admissions), Oracle prevailed at trial on all 93 of its

Oracle also

prevailed against both Rimini and Ravin on its

computer abuse claims. To remedy Rimini’s massive

fair market value of a hypothetical license, which it

measured at $35,600,000. Pet.App.80a. The jury also

awarded $14,400,000 in lost profits on the state-law

computer abuse claims, plus $27,000 for the costs of

investigating petitioners’ conduct. Pet.App.87a-88a.

The district court awarded Oracle $28,502,246.40

in attorneys’ fees, applying a 20% across-the-board

discount. The court also awarded $4,950,566.70 in

taxable costs and $12,774,550.26 in non-taxable

costs—25% less than what Oracle sought—much of

which stemmed from discovery and expert expenses

attributable to countering petitioners’ destruction and

dissembling.

Pet.App.69a-71a.

The court also

awarded Oracle $22,491,636.16 in prejudgment

interest on the copyright award and $5,279,060.12 in

prejudgment interest on the state-law awards.

Pet.App.27a. Finally, the court permanently enjoined

Rimini from further copying the software in violation

of Oracle’s licenses, and also enjoined Rimini and

Ravin from accessing Oracle servers in violation of its

The Ninth Circuit affirmed the jury’s copyright

verdict and copyright damages award. Pet.App.1a35a. The court relieved Rimini of state-law computer

abuse liability, reaching the dubious conclusion that

knowingly taking digital data from a website in an

unauthorized manner does not violate either statute

so long as the user has authorization to access the

website.3 Pet.App.22a-26a. The court affirmed the

3 But see Mount Olympus Mortg. Co. v. Anderson, No. 30-201400729438, 2016 WL 6157099, at *3 (Cal. Super. Ct. Sept. 19,

2016) (rejecting argument that §502(c) is “not meant to apply or

create liability where a person has been given permission to

award of costs, which included both taxable and nontaxable costs, and affirmed the prejudgment interest

award.4 Pet.App.27a-30a, 32a-33a. “In view of [its]

conclusion that there was no violation of the state

computer laws,” the court vacated and remanded for

reconsideration of the injunction and the amount of

attorneys’ fees.

Pet.App.30a-31a.

In doing so,

however, the court neither embraced nor even offered

any support for petitioners’ arguments that the initial

fees award was excessive or that the initial injunction

was overbroad.

Petitioners sought en banc review “on whether

non-taxable costs are awardable under the Copyright

Act” and “to clarify the appropriate date for

establishing the prejudgment interest rate in

Dkt.91 at i (9th Cir. Jan. 22, 2018) (capitalization

altered). The petition was denied without any noted

dissent. Pet.App.36a-37a.

REASONS FOR DENYING THE PETITION

This is neither the time nor the case for this Court

to resolve whether Congress meant what it said in

§505 of the Copyright Act when it authorized recovery

of a prevailing party’s “full costs.” Thirteen years ago,

the Ninth Circuit held that “full costs” does indeed

mean “full costs,” disagreeing with two short per

access computers or computer systems in question and through

that authorized access violates some terms of use agreement”).

4 The panel reduced the taxable costs award by approximately

$1.5 million because, as Oracle conceded, the district court “read

the wrong column when it awarded … taxable costs” and thus

inadvertently counted $1.5 million in non-taxable costs as

taxable costs. Pet.App.32a-33a.

curiam opinions from other circuits that had reached

the opposite conclusion. In the 13 years since, not a

single court of appeals has disagreed—likely because

the issue is neither important nor recurring, and

because the conclusion that full means full is

compelled by the plain text of the statute and is

entirely consistent with this Court’s costs cases. With

neither text nor precedent on their side, petitioners

resort to statutory and legislative history, insisting

that the Copyright Act has long had some

idiosyncratic view of the term “full costs.” In fact, the

history of §505 only reinforces that Congress has

always intended “full costs” to mean “full costs.”

The unusual facts of this case also make it a

particularly poor candidate for this Court’s plenary

review. Petitioners are facing a $12 million nontaxable costs award largely because their egregious

litigation misconduct—intentional spoliation of

evidence and lying under oath to cover up their

infringement—forced

Oracle

expend

extraordinary amount of resources proving conduct

that petitioners now no longer even deny. That is

presumably at least part of the reason why their

petition has attracted no amicus support.

The

egregious nature of petitioners’ misconduct both

before and during the litigation makes this a highly

atypical case and a poor vehicle for review, especially

from the standpoint of anyone supporting petitioners’

view of the statute. To the extent the marginal

disagreement among the lower courts about how to

interpret §505 will ever merit this Court’s review, this

is not the case to consider the question. Indeed, the

only result of granting certiorari here would be to force

Oracle to expend even more time and resources

fending off petitioners’ doomed efforts to take

responsibility for the full extent of their illicit actions.

There Is No Meaningful Circuit Conflict

That Warrants This Court’s Review.

Federal courts may award two types of costs to

civil litigants. The first are “taxable costs,” so called

because 28 U.S.C. §1920 authorizes “[a] judge or clerk

of any court of the United States” to “tax as costs” a

narrowly circumscribed set of litigation expenses,

including fees for court reporters, fees for printing and

docketing, and fees for witnesses, interpreters, and

court-appointed experts. See Crawford Fitting Co. v.

J.T. Gibbons, Inc., 482 U.S. 437, 441 (1987) (“Section

1920 enumerates expenses that a federal court may

tax as a cost.”); see also 28 U.S.C. §1821 (providing

rate limitations for certain taxable costs and

enumerating which travel expenses for witnesses may

“be taxable as costs”); 28 U.S.C. §1923 (enumerating

which docketing fees “may be taxed as costs”).

“Taxable costs” encompass only a fraction of a

litigant’s full costs. Taniguchi v. Kan Pac. Saipan,

Ltd., 566 U.S. 560, 573 (2012). By contrast, most

familiar expenses associated with litigation—

investigative fees, fees for party-retained experts, and

so on—fall under the heading of “non-taxable costs.”

While non-taxable costs are not available under

28 U.S.C. §1920, they may be awarded if a separate

statute allows for them. Thirteen years ago, the Ninth

Circuit concluded that §505 of the Copyright Act does

just that, as it expressly gives courts “discretion” to

award a prevailing party its “full costs.” See Twentieth

Century Fox Film Corp. v. Entm’t Distrib., 429 F.3d

869, 884 (9th Cir. 2005) (quoting 17 U.S.C. §505), cert.

denied sub nom., Dastar Corp. v. Random House, Inc.,

No. 05-1259 (U.S. June 26, 2006). In reaching that

conclusion, the Ninth Circuit did not follow the per

curiam opinions in Pinkham v. Camex, Inc., 84 F.3d

292 (8th Cir. 1996), and Artisan Contractors

Association of America, Inc. v. Frontier Insurance Co.,

275 F.3d 1038 (11th Cir. 2001), both of which

concluded that “full costs” actually means only

“taxable costs.” The defendant in Twentieth Century

Fox filed a petition for certiorari, and yet the costs

issue was not even one of the questions presented. See

Pet. for Cert., Dastar Corp., No. 05-1259 (U.S. filed

Mar. 28, 2006). And in the 13 years since the Court

denied certiorari, no court of appeals has questioned

the wisdom of Twentieth Century Fox, let alone

embraced the dubious position that “full costs” means

only a relatively small subset of costs.

To the contrary, as petitioners acknowledge (at 8

n.2), the three other circuits that have confronted the

issue have all agreed with the Ninth Circuit. The

Sixth Circuit affirmed an award of non-taxable costs

under §505 in Coles v. Wonder, 283 F.3d 798, 803 (6th

Cir. 2002). The First Circuit held in InvesSys, Inc. v.

McGraw-Hill Cos., 369 F.3d 16, 22-23 (1st Cir. 2004),

that “reimbursement of computer-assisted research,”

which is not included among taxable costs in 28 U.S.C.

§1920, is recoverable under §505. And the Seventh

Circuit recognized in dictum in Susan Wakeen Doll Co.

v. Ashton Drake Galleries, 272 F.3d 441, 458 (7th Cir.

2001), that “non-taxable costs” “must come through”

§505 “[i]n a copyright action.” See also BMG Rights

Mgmt. (US) LLC v. Cox Commc’ns, Inc., 234 F. Supp.

3d 760, 778 (E.D. Va. 2017) (citing Susan Wakeen Doll

as in “accord” with Twentieth Century Fox), vacated on

other grounds, 881 F.3d 293 (4th Cir. 2018). None of

those decisions even cited, let alone followed, the two

per curiam opinions with which Twentieth Century

Fox disagreed.

That should come as no surprise, as those

opinions contain little reasoning in support of their

results. The Eighth Circuit’s per curiam opinion in

Pinkham merely states in conclusory terms that

Congress’ use of the phrase “full costs” does not

“evidence[ a] congressional intent to treat 17 U.S.C.

§505 costs differently from costs authorized in other

statutes.” 84 F.3d at 295. The court never explained

how “full costs” might mean something other than full

costs, or how to reconcile the canon against surplusage

with its reading the word “full” out of the statute. The

court indicated that its paucity of reasoning flowed

from a paucity of briefing, noting that “[t]he parties

ha[d] not directed [the court] to any authority

discussing the source or meaning of ‘full costs’ in 17

U.S.C. §505.” Id.

The Eleventh Circuit, for its part, spent two

paragraphs summarizing this Court’s then-most

recent costs case, and then simply noted, without

further explanation: “The Eighth Circuit held that

expert witness fees taxable as costs pursuant to §505

are limited as provided in 28 U.S.C. §§1920 and

1821(b). We agree.” Artisan Contractors, 275 F.3d at

1038-40. Petitioners’ “direct and acknowledged circuit

split” thus boils down to a disagreement with two per

curiam opinions issued 17 and 22 years ago that,

between them, contain about two sentences of

reasoning and have not been followed by a single court

of appeals since.

Unable to muster much of a circuit split,

petitioners resort to invoking a district split. But this

Court is not in the business of resolving division

among the district courts. If anything, the fact that

district courts are addressing the issue in circuits that

have not yet done so is an indication that further

percolation is both necessary and appropriate.

II. The Decision Below Is Correct.

There is also no need for this Court to intervene

in this case because the decision below is plainly

correct. The Copyright Act provides that a court “in

its discretion may allow the recovery of full costs.” 17

U.S.C. §505. As the Ninth Circuit correctly concluded,

this case begins and ends with the plain text of the

statute:

“Full costs” means full costs, not, as

petitioners would have it, only some costs. Any other

conclusion would read the term “full” out of the

statute. Contrary to petitioners’ contentions, that

plain-text reading of the statute is in accord with this

Court’s precedents and the history of the Copyright

Act, both of which reinforce the conclusion that §505

means exactly what it says.

A. The Ninth Circuit’s Interpretation of

§505 Is Entirely Consistent With This

Court’s Precedents.

Petitioners contend that the Ninth Circuit’s plaintext reading of §505 “cannot be reconciled with this

Court’s holdings and reasoning in Crawford Fitting,

Casey, and Murphy.” Pet.12. They are mistaken.

None of those cases concerned (or even mentioned) the

term “full costs” or §505 of the Copyright Act. If

anything, these cases only reinforce the conclusion

that a statute that expressly provides for recovery of

“full costs” does exactly that.

Starting with Crawford Fitting, the question in

that employment discrimination suit was whether

Federal Rule of Civil Procedure 54(d)—which at the

time provided, in relevant part, that “costs shall be

allowed as of course to the prevailing party”—

authorized courts to award costs “above and beyond”

those set forth in 28 U.S.C. §1920.5 Crawford Fitting,

482 U.S. at 441. The Court held that Rule 54(d) did

not give courts “discretion to tax whatever costs may

seem appropriate,” for if it did, “then §1920, which

enumerates the costs that may be taxed, [would]

serve[] no role whatsoever.” Id. At the same time,

however, the Court recognized that Congress can

certainly expand by separate statute the universe of

recoverable costs in claims brought under that specific

statute. Crawford Fitting thus does nothing more

than set a default: In cases governed by Rule 54(d), a

prevailing party can recover only the limited

categories of costs that may be taxed under 28 U.S.C.

§1920. But in cases where costs are authorized by a

separate statute, that separate statute controls.

The Ninth Circuit’s decision in Twentieth Century

Fox is entirely in accord with Crawford Fitting

(unsurprisingly, since the latter was decided more

than a decade before the former). The Ninth Circuit

concluded that §505 is exactly the sort of separate

statute Crawford Fitting contemplated, as §505

5 As explained supra, §1920 enumerates a narrow set of

“expenses a court ‘may’ tax as costs,” and 28 U.S.C. §1821

“specifies the amount[s]” that may be taxed as costs under §1920.

Crawford Fitting, 482 U.S. at 441.

expressly authorizes courts to award prevailing

parties their “full costs,” not just the costs set forth in

§1920. Twentieth Century Fox, 429 F.3d at 885

(emphasis added). And the Ninth Circuit invoked

Crawford Fitting for the very same canon against

superfluity that controlled the analysis there, holding

that reading §505 “as limiting the costs that may be

awarded to any particular subset of taxable costs

effectively reads the word ‘full’ out of the statute,”

which would “violate the long standing principle of

statute interpretation that ‘statutes should not be

construed to make surplusage of any provision.’” Id.

(quoting Nw. Forest Res. Council v. Glickman, 82 F.3d

825, 834 (9th Cir. 1996)).

Petitioners attempt to resist that conclusion by

positing that “full” simply means that a prevailing

party can recover the entirety of the costs allowable

under §1920. But they do not and cannot explain why

Congress would need to include that clarification since

the same is true under §1920 itself. Indeed, statutes

often authorize recovery of “costs” simpliciter, without

specifying that each enumerated cost may be

recovered “in full.” See, e.g., 42 U.S.C. §6104(e)(1);

29 U.S.C. §216(b); 15 U.S.C. §1691e(d). Petitioners do

not identify any case that has held that the absence of

the word “full” somehow means that these statutes

authorize recovery of something less than the full

amount of each cost.

West Virginia University Hospitals, Inc. v. Casey,

499 U.S. 83 (1991), is of even less relevance. Like

Crawford Fitting, Casey did not concern or mention

the phrase “full costs” or the Copyright Act. Instead,

the question in Casey was whether a statute that

permitted “the award of ‘a reasonable attorney’s fee’”

also permitted the award of “fees for services rendered

by experts.’” Id. at 84. The Court answered that

question in the negative, reaching the commonsense

conclusion that a statute that explicitly authorized

recovery only of attorney’s fees did not also implicitly

authorize recovery of expert fees. Id. at 102. As the

Court explained, reading the phrase “attorney’s fees”

to implicitly include expert fees would render the

“dozens of statutes referring to the two

separately … inexplicable exercise[s] in redundancy.”

Id. at 92.

Arlington Central School District Board of

Education v. Murphy, 548 U.S. 291 (2006), is equally

off-point. As in Casey, the question in Murphy was

whether a statute that permits prevailing parties to

recover “reasonable attorneys’ fees as part of the costs”

also permits recovery of expert fees. Id. at 293 (citing

20 U.S.C. §1415(i)(3)(B)). The Court held that the

statute did not, reasoning once again that “the term

‘attorneys’ fees,’ standing alone, is generally not

understood as encompassing expert fees.” Id. at 303.

In other words, Murphy followed from a

straightforward application of Casey—which has

nothing to do with the question at issue here—and

(like Crawford Fitting and Casey) did not even

mention the phrase “full costs” or the Copyright Act.

Petitioners’ assertion that Murphy somehow

“recognizes” that the Copyright Act’s allowance for

“full costs” is limited to “taxable costs,” Pet.15, is thus

nothing more than wishful thinking.

B. “Full Costs” Has Always Meant Full

Costs.

With neither text nor precedent on their side,

petitioners resort to statutory and legislative history,

insisting that the term “full costs” in the Copyright Act

has historically been understood to mean something

less than full costs. In fact, petitioners have their

history backward: The predecessor to §505 of the

created a default rule of only taxable costs, at a time

when full costs meant exactly that in the copyright

context.

At the Founding, prevailing parties in copyright

cases were routinely awarded their complete litigation

expenses. One of the very first statutes the First

Congress enacted instructed the federal courts to

apply state law in fashioning awards of costs and fees

in suits at law, which (unlike suits in equity) included

1 Stat. 93.6 And at the Founding, state law followed

“the English practice of attempting to provide the

successful litigant with total reimbursement.” 10

Charles Alan Wright et al., Federal Practice and

Procedure §2665 (3d ed. 1998) (emphasis added). In

other words, the original practice in copyright cases

was for prevailing parties to receive all the costs they

expended in the litigation—i.e., their “full costs.”

That regime was briefly interrupted in 1819,

when Congress gave the circuit courts “original

6 The First Judiciary Act separately made provision for

recovery of costs in admiralty and equity cases. See Judiciary Act

of 1789, ch. 20, §20, 1 Stat. 73, 83.

cognizance” over “all actions” sounding in copyright.

See Act of Feb. 15, 1819, ch. 19, 3 Stat. 481, 481.

Under the First Judiciary Act, costs were unavailable

to prevailing parties in original jurisdiction cases in

the circuit courts. See Judiciary Act of 1789, ch. 20,

§20, 1 Stat. 73, 83; Pet.16. Because Congress initially

did not make any separate provision for costs in

was barred from recovering any costs, and indeed

could even “be adjudged to pay costs” to the other side

if the claim yielded less than $500 in damages.

Judiciary Act of 1789, ch. 20, §20, 1 Stat. 73, 83.

That changed in 1831. The Copyright Act of 1831

provided that “in all recoveries under [that] act, either

for damages, forfeitures, or penalties, full costs shall

be allowed thereon, any thing in any former act to the

contrary notwithstanding.” Copyright Act of 1831, ch.

16, §12, 4 Stat. 436, 439. Notably, that statute

predated by two decades the precursor to 28 U.S.C.

§1920, the first statute to create a default regime

under which federal courts could award only certain

enumerated “taxable costs.” See Fee Act of 1853, ch.

80, 10 Stat. 160, 161; In re Online DVD-Rental

Antitrust Litig., 779 F.3d 914, 926 (9th Cir. 2015).

Petitioners’ contention that the 1831 Copyright Act’s

non-obstante clause (“any thing in any former act to

the contrary notwithstanding”) evinces Congress’

intent “simply [to] overr[i]de the potential penalty

when a plaintiff recovered less than $500 in damages,”

Pet.16-17, thus makes no sense. In 1831, there was no

federal default rule of only “taxable costs,” so allowing

for recovery of full costs not only meant that successful

loser’s costs in a matter involving less than $500, but

also reinstated the default state rule, under which

prevailing copyright litigants received all of their

costs, not just a subset.

The legislative sources petitioners cite do not

support their claim either. Petitioners do not cite

anything addressing the 1831 statute, and the 1909

House Report they cite simply notes that, under the

1789 statute, a prevailing party was “not … allowed …

costs.” H.R. Rep. No. 60-2222, at 19 (1909). That

Report says nothing whatsoever about what costs

Congress allowed when it revised the statute to

mandate recovery of “full costs.” Nor does the

legislative history for the 1976 Act, which just

“changed the rule from a mandatory one to one of

discretion.” Fogerty v. Fantasy, Inc., 510 U.S. 517, 524

n.11 (1994). The statutory and legislative history thus

just reinforces what is plain on the face of §505: When

Congress authorized recovery of “full costs” in

III. This Case Is A Poor Candidate For Plenary

Review.

Even if this Court were inclined to resolve the

question presented, this is not the case in which to do

so. Petitioners were unable to muster even a single

amicus brief supporting their petition, which suggests

either that the issue is not truly of any great

importance, or that no one who supports their position

thinks this case is an appropriate vehicle for this

Court’s review (or both).

Petitioners face an unusually high non-taxable

costs award because they engaged in unusually

egregious litigation misconduct, which made

uncovering evidence of their serial infringement

unusually expensive.7 That is hardly the ideal case in

which to press the position that Congress did not

intend copyright infringers to bear responsibility for

the full costs that their unlawful conduct forces a

525 (“section 505 is intended in part to encourage the

assertion of colorable copyright claims, to deter

infringement, and to make the plaintiff whole”

(emphasis added)). To the contrary, this case only

underscores the wisdom of Congress’ decision to grant

courts discretion to award “full costs” in copyright

cases. If this issue actually arises with anywhere near

the frequency petitioners suggest, it should not take

long for a more suitable vehicle to come along—say, a

of proving infringement. In the meantime, Oracle

should not be forced to spend even more time and

money litigating a case that has already dragged on

for eight years.

Petitioners make the puzzling contention that

this issue “often evades appellate review” because

“[c]osts are, almost by definition, the last item raised

on appeal.” Pet.22. But courts are just as bound to

reach the last item raised on appeal as they are to

reach the first—which likely explains why Crawford

Fitting, Casey, Murphy, and other costs cases have

had no trouble finding their way either to appellate

courts or to this Court. The same could be said,

moreover, of all manner of post-liability issues, yet

7 Given that egregious litigation misconduct, costs may well

have been awardable below as a sanction, which further

underscores why this case is a particularly poor vehicle for

considering the question presented.

this Court regularly considers cases involving

attorneys’ fees, interest, and other post-judgment

issues. See, e.g., Culbertson v. Berryhill, No. 17-773

(U.S. cert. granted May 21, 2018) (scope of fees subject

to 25% cap in Social Security cases); Murphy v. Smith,

138 S. Ct. 784 (2018) (scope of fees in civil rights

litigation under Prison Litigation Reform Act); CRST

Van Expedited v. EEOC, 136 S. Ct. 1642 (2016)

(availability of attorneys’ fees under Title VII).

Indeed, petitioners’ “last item” point will matter,

if at all, only if the party that prevailed in the district

court does not prevail on appeal. Otherwise, the

appellate court will need to consider whether or what

costs (or fees or interest) should have been awarded,

just as the district court did below. Case in point,

petitioners’ lone example of this purported

impediment to review is a recent case in which the

Fourth Circuit did not need to reach the costs issue

because it reversed the liability holding. See Pet.2223 (citing BMG Rights Mgmt. (US) LLC v. Cox

Commc’ns, Inc., 881 F.3d 293 (4th Cir. 2018)). The fact

that some appeals are resolved in a way that takes

costs off the table hardly constitutes a structural

barrier to reviewing costs issues. To the contrary, it

just undermines petitioners’ claim that the question

presented is so important that it must be resolved in a

case that is a poor vehicle and involves atypical and

egregious misconduct.

CONCLUSION

For the foregoing reasons, the Court should deny

the petition for certiorari.

Respectfully submitted,

WILLIAM A. ISAACSON

KAREN L. DUNN

BOIES, SCHILLER

& FLEXNER LLP

1401 New York

Avenue, NW

Washington, DC 20005

(202) 237-2727

PAUL D. CLEMENT

Counsel of Record

ERIN E. MURPHY

MATTHEW D. ROWEN

KIRKLAND & ELLIS LLP

655 Fifteenth Street, NW

Washington, DC 20005

(202) 879-5000

paul.clement@kirkland.com

JOHN A. POLITO

MORGAN, LEWIS &

BOCKIUS LLP

One Market

Spear Street Tower

San Francisco, CA 94105

(415) 442-1000

DAVID B. SALMONS

MORGAN, LEWIS &

BOCKIUS LLP

2020 K Street, NW

Washington, DC 20006

(202) 373-6238

Counsel for Respondents

August 1, 2018

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.